Prosecution Insights
Last updated: April 18, 2026
Application No. 16/390,483

COMPACT MULTI-MATERIAL CUT-OFF TOOL

Non-Final OA §103
Filed
Apr 22, 2019
Examiner
AYALA, FERNANDO A
Art Unit
3724
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Milwaukee Electric Tool Corporation
OA Round
10 (Non-Final)
53%
Grant Probability
Moderate
10-11
OA Rounds
3y 7m
To Grant
80%
With Interview

Examiner Intelligence

Grants 53% of resolved cases
53%
Career Allow Rate
250 granted / 469 resolved
-16.7% vs TC avg
Strong +26% interview lift
Without
With
+26.3%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
63 currently pending
Career history
532
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
47.8%
+7.8% vs TC avg
§102
23.6%
-16.4% vs TC avg
§112
27.0%
-13.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 469 resolved cases

Office Action

§103
Notice of Pre-AIA or AIA Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . DETAILED ACTION Election/Restrictions Claims 8-21 were previously withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, and remain withdrawn. Claim Rejections - 35 USC § 103 The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. Claims 1-4, 23-24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over US 20040140781 Craven, in view of US20110272172, Lau, and US 20040103540, Tilley. Regarding claim 1, Craven discloses A cut-off tool comprising: a housing (combination of motor housing 3 and handle 2) including a motor housing portion (3), a handle portion (2) extending along a handle axis (longitudinal axis of handle 2 in a direction transverse to the motor housing portion (see fig 1), a first lateral side and a second lateral side separated by a reference plane (see annotated fig 2 below), the reference plane containing the handle axis and oriented perpendicular to the motor housing portion (fig 2), a first indicator (“F”) on the first lateral side of the housing, and a second indicator (“R”) on the second lateral side of the housing (fig 2); an arbor (9) supported by the housing for relative movement therewith (since the arbor moves when the housing is moved), the arbor rotatable about a rotational axis of the arbor (9), the rotational axis extending through the motor housing portion (fig 1 and fig 4); a cutting tool (11) attachable to the arbor (par. 0019); a motor (par 0019) coupled to the arbor to provide torque thereto (to rotatably drive the tool), the motor supported by the motor housing portion (See par 0019); a trigger 4; a shuttle 14 supported by the housing (FIG 1-2), the shuttle being configured to receive input from a user (PAR. 0026); and a combined motor activation/forward-reverse switch (6) connected to the trigger and the shuttle (fig. 3) the switch being operable to adjust rotation of the motor between a first rotational direction and an opposite, second direction for selectively rotating the cutting disk in the first rotational direction or second rotational direction (par 0026), respectively; wherein the shuttle is movable between a plurality of positions relative to the housing (par 0027 and fig 3), wherein a first position of the shuttle adjacent the first indicator corresponds to the first rotational direction of the motor and the cutting disk, and wherein a second position of the shuttle adjacent the second indicator corresponds to the second rotational direction of the motor and the cutting disk (fig 2 and see par. 0027); and wherein a position of the shuttle adjacent to the first indicator indicates that an instantaneous rotational direction of the motor and the cutting disk is the first rotational direction and a position of the shuttle adjacent the second indicator indicates that the instantaneous rotational direction of the motor and the cutting disk is the second rotational direction (par 0027 and fig. 2). Craven lacks (I) cutting tool in the form of a disk and (II) a battery pack removably coupled to the housing for providing power to the motor, the battery pack receivable within a receptacle positioned at an end of the handle portion opposite the motor housing portion. Regarding feature (I) Tilley discloses a rotary drill apparatus in the same field of endeavor as the rotary drill handheld tool of Craven which includes a cutting disk being attached to a chuck / spindle 19 of the rotary drill in order to allow the drill to allow attachment to a disk such that the drill/disk can cut certain workpieces in a rotatable manner (par 0008 and 0009). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Craven by including a cutting disk to attach to the drill such that the tool include a cutting head being a cutting disk in order to allow attachment to a disk such that the drill/disk can cut certain workpieces in a rotatable as taught via Tilley. Regarding feature (II) Lau discloses a motor-operated rotary head handheld tool, in the same field of endeavor as the motor-operated rotary head handheld tool of Craven and of the present invention and, includes the motor 102 being powered by a battery pack 146 removably coupled to the housing (fig. 8) for providing power to the motor, (par 0058) the battery pack receivable within a receptacle positioned at an end of the handle portion (100) opposite the motor housing portion (top of handle part 100, which houses motor, fig 8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Craven by including a battery pack removably coupled to the housing for providing power to the motor, the battery pack receivable within a receptacle positioned at an end of the handle portion opposite the motor housing portion (as shown in Lau) in order to power the battery in a manner known in the art to power such tools and to power the tool without the need for a cord. Regarding Claim 2, in Craven the switch 16 is positioned adjacent the handle portion (fig 3a). Regarding Claim 3, in Craven wherein the trigger selectively activates the motor; and the shuttle is positioned proximate the trigger for actuating the switch between the first position and the second position (see par 0020-0021). Regarding Claim 4, in Craven the shuttle includes a user input portion (top portion of shuttle 14) positioned adjacent the trigger (fig 2), the user-input portion configured to receive user input to laterally move the shuttle relative to the handle portion between the plurality of positions (par 0027). Regarding Claim 23, in Craven the movement of the shuttle towards the first position indicates the instantaneous rotational direction of the motor and the cutting disk in the first rotational direction (par 0027). Regarding Claim 24, in Craven the movement of the shuttle towards the second position indicates the instantaneous rotational direction of the motor and the cutting disk in the second rotational direction (par 0027). Regarding Claim 26 in Craven first indicator (F) is a letter (fig 1-2). Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yuta in view of Craven in view of Lau and Tilley and further in view of USPGPUB 20110005084, Thorson. Regarding Claims 5, the Craven tool as modified above, discloses all of the limitations of Claim 4 as discussed above. Modified Craven lacks the shuttle movable to a third position intermediate the first position and the second position, and wherein the third position corresponds to a lockout position of the switch in which the motor remains deactivated in response to the trigger actuating the switch. Thorson discloses a cutting tool which, like the cutting tool Craven which includes a trigger that moves a cutter in either a reverse or forward direction, par 47. In addition, Thorson discloses that in such a trigger actuated tool it is known to have a direction switch which is positionable in one of three positions, one position corresponding to a forward direction of the tool, one to a reverse direction and a third position intermediate the first position and the second position, and wherein the third position corresponds to a lockout position of the switch in which the motor remains deactivated in response to the trigger actuating the switch (par. 0044), in order to prevent “inadvertent powering of the motor” (par 0044). It would have been obvious to one of ordinary skill in the art at the time of the invention to further modify Craven by including the shuttle and the switch thereof to be movable to a third position intermediate the first position and the second position, and wherein the third position corresponds to a lockout position of the switch in which the motor remains deactivated in response to the trigger actuating the switch, in order to prevent “inadvertent powering of the motor” as taught by Thorson (par 0044, Thorson). Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Craven in view of Lau and Tilley, and further in view of USPGPUB 20070120527, Roehm. Regarding Claims 6-7, the Craven assembly as modified by Puzio, discloses all the limitations of Claim 4 as discussed above. Modified Craven lacks the housing including a display window, wherein the shuttle includes an indicator portion adjustably positioned within the display window, and wherein a position of the indicator portion relative to the display window indicates an instantaneous rotational direction of the motor and the cutting disk the instantaneous rotational direction being either the first rotational direction or the second rotational direction (Claim 6), the display window being defined by a plurality of slots, wherein the indicator portion includes a plurality of sections positionable relative to the slots by adjustment of the shuttle, wherein one of the sections is aligned with one of the slots to indicate the first rotational direction of the motor and cutting disk, and wherein another one of the sections is aligned with another one of the slots to indicate the second rotational direction of the motor and cutting disk (Claim 7). Roehm discloses a battery-operated screwdriver which, like the handheld tool of Craven and of the present application, includes a tool head that can be user-selectively driven in multiple directions (par 0008). Roehm also discloses that in such an assembly it is known to include a display window 59 on the housing thereof which includes an indicator portion (LED lights of par 0008) adjustably positioned within the display window (as the lights are either lit or unlit depending on the selected rotation of rotation), and wherein a position of the indicator portion relative to the display window indicates the instantaneous rotational direction of the motor and tool (par 0008), the instantaneous rotational direction being either the first rotational direction or the second rotational direction (par 0008) (Claim 6). Wherein the display window is defined by a plurality of slots (fig 4, slots above the lights 58/57 which lead to arrows 90 and 92), wherein the indicator portion includes a plurality of sections positionable relative to the slots by adjustment of the direction selecting portion of the device (pars 0008 and 0047, since the green or red LED lights which comprise the indicator portion of Roehm are positioned below the corresponding slots 90 and 92 and are selectively illuminated, i.e. positioned below a corresponding slot portion based on the selected rotational direction, which rotational direction is selected via a switch 38), wherein one of the sections is aligned with one of the slots to indicate the first rotational direction of the motor and tool (LED under arrow shaped slot 90), and wherein another one of the sections is aligned with another one of the slots to indicate the second rotational direction of the motor and tool (LED under arrow shaped slot 92) (Claim 7), in order to indicate to a user which direction the tool is rotating in (pars 0008 and 0047). It would have been obvious to one of ordinary skill in the art at the time of the invention to further modify Craven cutting tool with the teachings of Roehm’s directional display to include a display window, wherein the shuttle includes an indicator portion adjustably positioned within the display window, and wherein a position of the indicator portion relative to the display window indicates the rotational direction of the motor and wherein the display window is defined by a plurality of slots, wherein the indicator portion includes a plurality of sections positionable relative to the slots by adjustment of the shuttle (since the shuttle of Craven is analogous to the direction controlling switch of Roehm), wherein one of the sections is aligned with one of the slots to indicate the first rotational direction of the motor and cutting disk, and wherein another one of the sections is aligned with another one of the slots to indicate the second rotational direction of the motor and tool in order to indicate to a user which direction the tool is rotating in, as taught by Roehm (pars 0008 and 0047 of Roehm). Response to Arguments Applicant’s arguments, see arguments filed 8-22-2025, with respect to the prior art rejection(s) under 35 USC 103 been fully considered and are persuasive. Therefore, the rejection has been withdrawn. Applicant argues persuasively that Puzio lacks the indicators being on analogous first and lateral sides of a housing as required by Claim 1 and therefor the combination of the primary reference in view of the Puzio reference also lacks such features. However, upon further consideration, a new ground(s) of rejection is made in view of Craven. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPGPUBG 20060169111 5014793 and 20180290322 disclose rotatable tools with reverse shuttles and thus disclose disclosures pertinent to the present invention. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Any inquiry concerning this communication or earlier communications from the examiner should be directed to FERNANDO A AYALA whose telephone number is (571)270-5336. The examiner can normally be reached on Monday-Friday 9am-5pm Eastern standard. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached on 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /FERNANDO AYALA/ Examiner, Art Unit 3724 /BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
Read full office action

Prosecution Timeline

Apr 22, 2019
Application Filed
Aug 05, 2020
Non-Final Rejection — §103
Dec 11, 2020
Response Filed
Mar 08, 2021
Final Rejection — §103
Jul 12, 2021
Notice of Allowance
Jul 12, 2021
Response after Non-Final Action
Aug 31, 2021
Response after Non-Final Action
Jan 26, 2022
Final Rejection — §103
Mar 23, 2022
Applicant Interview (Telephonic)
Mar 24, 2022
Examiner Interview Summary
Jun 07, 2022
Response after Non-Final Action
Aug 10, 2022
Final Rejection — §103
Jan 18, 2023
Request for Continued Examination
Jan 24, 2023
Response after Non-Final Action
Feb 23, 2023
Non-Final Rejection — §103
Apr 26, 2023
Interview Requested
May 25, 2023
Applicant Interview (Telephonic)
May 30, 2023
Examiner Interview Summary
Jun 02, 2023
Response Filed
Sep 20, 2023
Final Rejection — §103
Dec 22, 2023
Request for Continued Examination
Jan 03, 2024
Response after Non-Final Action
Jan 08, 2024
Non-Final Rejection — §103
Apr 12, 2024
Response Filed
Jul 24, 2024
Final Rejection — §103
Nov 01, 2024
Notice of Allowance
Dec 19, 2024
Response after Non-Final Action
Dec 19, 2024
Response after Non-Final Action
Jan 11, 2025
Response after Non-Final Action
Jan 21, 2025
Response after Non-Final Action
Feb 14, 2025
Response after Non-Final Action
Feb 15, 2025
Response after Non-Final Action
May 17, 2025
Non-Final Rejection — §103
Aug 05, 2025
Interview Requested
Aug 14, 2025
Applicant Interview (Telephonic)
Aug 18, 2025
Examiner Interview Summary
Aug 22, 2025
Response Filed
Jan 27, 2026
Non-Final Rejection — §103
Mar 30, 2026
Response Filed

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

10-11
Expected OA Rounds
53%
Grant Probability
80%
With Interview (+26.3%)
3y 7m
Median Time to Grant
High
PTA Risk
Based on 469 resolved cases by this examiner. Grant probability derived from career allow rate.

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